OPPOSITION No B 3 048 819

Sanboy Comercio de Productos Alimenticios, S.L., c. Osca 18-20, 08830 Sant Boi de Llobregat, Spain (opponent), represented by Sugrañes Patentes y Marcas, Calle de Provenza 304, 08008 Barcelona, Spain (professional representative)

a g a i n s t

Coree Company Limited, room 1808 18/F Tower, Admiralty Centre 18, Harcourt Road Admiralty, Hong Kong (applicant), represented by Cabinet Lavoix, 2 place d'Estienne d'Orves, 75009 Paris, France (professional representative).

On 30/08/2019, the Opposition Division takes the following

DECISION:

1. Opposition No B 3 048 819 is upheld for all the contested goods.

2. European Union trade mark application No 17 613 324 is rejected in its entirety.

3. The applicant bears the costs, fixed at EUR 620.

REASONS

The opponent filed an opposition against all the goods of European Union trade mark application No 17 613 324 for the figurative sign . The opposition is based on, inter alia, European Union trade mark registration No 12 899 258 for the word mark ‘SYMBIORAM’. The opponent invoked Article 8(1)(b) EUTMR.

LIKELIHOOD OF CONFUSION — ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs, and the relevant public.

The opposition is based on more than one earlier trade mark. The Opposition Division finds it appropriate to first examine the opposition in relation to the opponent’s European Union trade mark registration No 12 899 258.

a) The goods

The goods on which the opposition is based are, inter alia, the following:

Class 5: Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic food and substances adapted for medical or veterinary use, food for babies; dietetic food and substances adapted for special diets, nutritional supplements, dietary and vitamin supplements; healthcare preparations; food supplements for human beings.

Class 29: Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs; milk and milk products; edible oils and fats.

The contested goods are the following:

Class 5: Lacteal flour for babies; food for babies (except lacteal flour for babies); powdered milk foods for infants; dietary supplements for infants.

Class 29: Powdered milk; powdered milk (except for infants); milk products; processed dairy products.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 5

The contested lacteal flour for babies; food for babies (except lacteal flour for babies); powdered milk foods for infants are identical to the opponent’s food for babies, because the opponent’s goods include, or overlap with, the contested goods.

The contested dietary supplements for infants are included in the broad category of the opponent’s dietary supplements. Therefore, they are identical.

Contested goods in Class 29

The contested milk products; processed dairy products are identical to the opponent’s milk products, either because they are identically contained in both lists or because the opponent’s goods include the contested goods.

The contested powdered milk; powdered milk (except for infants) are similar at least to an average degree to the opponent’s milk products. They have the same purpose, distribution channels and sales outlets and can be expected to be manufactured by the same companies. They can also be in competition.

b) Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be partly identical and partly similar at least to an average degree are directed at the public at large.

While some goods are daily ordinary consumption goods (e.g. milk products) which will be purchased with an average degree of attention, others can have impact on health (e.g. dietary supplements for infants) and will be purchased with a higher degree of attention. Therefore, the degree of attention may vary from average to above average.

c) The signs

SYMBIORAM
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is a word mark composed of the word ‘SYMBIORAM’, whereas the contested sign is a figurative mark composed of the words ‘SYMBIO’ and ‘TECH’ placed against a red rectangle with angles slightly cut off. A stylised white square appears between the words ‘SYMBIO’ and ‘TECH’. The font used in the contested sign is standard.

Although it is acknowledged that the earlier mark is composed of a sole verbal component only, the relevant consumers, when perceiving a verbal sign, will break it down into elements that suggest a concrete meaning, or that resemble words that they already know (13/02/2007, T 256/04, Respicur, EU:T:2007:46, § 57; 13/02/2008, T 146/06, Aturion, EU:T:2008:33, § 58). Therefore, and as explained further, it is not unlikely that the beginning of the earlier mark ‘SYMBIO’ will be dissected by part of the relevant public.

The word ‘symbio’ might be perceived by part of the relevant public as referring to the Greek word ‘συμβίωση’ (symvíosi) which means ‘common living’. Since it is a Greek origin word, it appears in a similar way in many languages of the European Union, for example, in English ‘symbiosis’, in French, Portuguese, Danish and Dutch ‘symbiose’, in Italian ‘simbiosi’, in Bulgarian ‘симбиоза’, in Hungarian ‘szimbiózis, in Polish ‘symbioza’, etc.

The applicant argues that the word ‘SYMBIO’ has a low distinctive character as it ‘is widely used in trade by manufacturers and vendors of dietary supplements and health foods to designate their products’. It submitted several screenshots with the word in question to support its claim. It is however not clear when, where and to what extent it has been used, in particular, what territory and whether it is aimed to designate any specific characterises of the goods. Consequently, it is not sufficient to prove that the relevant consumer has become accustomed to dietary products labelled with the mark ‘SYMBIO’. Although the coinciding element ‘SYMBIO’ can be indeed meaningful for part of the relevant public, it is not directly descriptive of any characteristics of the goods at issue. At most, it is allusive to the word ‘symbiotic’. The degree of distinctiveness of the element ‘SYMBIO’ is, therefore, average. This was confirmed in the Boards of Appeal’s decision (06/09/2018, R 959/2018-5, Symbionat/Symbioram, § 45).

The second verbal part ‘RAM’ of the earlier mark has no direct meaning for the goods in question and is, therefore, distinctive.

The word ‘TECH’ in the contested sign is a common reference to the word ‘Technology’. It will be understood by the relevant public as a manner of accomplishing something especially using technical processes, methods, or knowledge. This verbal element is thus descriptive of a characteristic of the goods, in particular, that these goods all imply the use of some sort of technology and technical development. Furthermore, the goods in question belong to the field of biotechnology. Therefore, its distinctiveness is limited.

When signs consist of both verbal and figurative components, in principle, the verbal component of the sign usually has a stronger impact on the consumer than the figurative component. This is because the public does not tend to analyse signs and will more easily refer to the signs in question by their verbal element than by describing their figurative elements (14/07/2005, T 312/03, Selenium-Ace, EU:T:2005:289, § 37). Therefore, the background, which is rather commonplace, and the figurative element of the contested sign, have a secondary impact on the comparison.

Furthermore, consumers generally tend to focus on the beginning of a sign when they encounter a trade mark. This is because the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader.

The contested sign has no elements that could be considered clearly more dominant (visually eye-catching) than other elements.

Visually, the signs coincide in the initial parts, ‘SYMBIO’. However, they differ in the last three letters, ‘RAM’, of the earlier mark, the verbal element ‘TECH’ in the contested sign, which has a limited distinctiveness, and its background and figurative element, which will have less impact on the consumer, as explained above. Furthermore, the earlier mark is a single word mark and the contested sign is composed of two verbal elements.

Taking into account that the signs coincide in their distinctive beginnings ‘SYMBIO’, while the differing elements in the contested sign will have less impact, the signs are visually similar to an average degree.

Aurally, irrespective of the different pronunciation rules in different parts of the relevant territory, the pronunciation of the signs coincides in the sound of the letters ‛SYMBIO’, pronounced in three syllables, present identically at the beginnings of both signs. The pronunciation differs in the sound of the letters ‛RAM’ of the earlier mark and ‘TECH’ of the contested sign, the latter having a limited distinctiveness and therefore a reduced impact. The conflicting signs have both four syllables, of which the first three are identically pronounced.

Therefore, the signs are aurally highly similar.

Conceptually, the earlier mark as a whole does not have any clear meaning. The contested sign as a whole may be associated with, for example the notion of symbiotic technology. Nevertheless, the element ‘SYMBIO’ will be perceived, by a part of the public, with the same meaning and to that extent the signs are similar to an average degree.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

d) Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

e) Global assessment, other arguments and conclusion

The Court has stated that likelihood of confusion must be appreciated globally, taking into account all the factors relevant to the circumstances of the case; this appreciation depends on numerous elements and, in particular, on the degree of recognition of the mark on the market, the association that the public might make between the two marks and the degree of similarity between the signs and the goods and services (11/11/1997, C 251/95, Sabèl, EU:C:1997:528, § 22).

The contested goods are partly identical and partly similar to at least an average degree. They target the general public whose degree of attention may vary from average to above average. The signs are visually and conceptually similar to an average degree, and aurally they are highly similar. The distinctiveness of the earlier mark is normal.

The main differences between the signs are their last letters, namely ‘RAM’ (earlier mark) and ‘TECH’ (contested sign) as well as the figurative element and the background in the contested sign. The figurative element and background are secondary, as normally the verbal part of a sign catches the consumer’s attention. Furthermore, the word ‘TECH’ has a limited distinctiveness. The signs have in common the distinctive verbal element ‘SYMBIO’ which is the beginning in both signs. As explained above, the beginnings are more memorable by the public. The Opposition Division is therefore of the opinion that the aforesaid differences cannot outweigh the visual, aural and conceptual similarities.

Account is taken of the fact that average consumers rarely have the chance to make a direct comparison between different marks, but must trust in their imperfect recollection of them (22/06/1999, C 342/97, Lloyd Schuhfabrik, EU:C:1999:323, § 26). Even consumers who pay a higher degree of attention need to rely on their imperfect recollection of trade marks (21/11/2013, T 443/12, ancotel, EU:T:2013:605, § 54).

The applicant refers to a previous decision of the Office to support its arguments (i.e. 08/04/2016, B 2 413 170, Symbioram/Symbion). However, the Office is not bound by its previous decisions as each case has to be dealt with separately and with regard to its particularities.

This practice has been fully supported by the General Court, which stated that, according to settled case-law, the legality of decisions is to be assessed purely with reference to the EUTMR, and not to the Office’s practice in earlier decisions (30/06/2004, T 281/02, Mehr für Ihr Geld, EU:T:2004:198).

While the Office does have a duty to exercise its powers in accordance with the general principles of European Union law, such as the principle of equal treatment and the principle of sound administration, the way in which these principles are applied must be consistent with respect to legality. It must also be emphasised that each case must be examined on its own individual merits. The outcome of any particular case will depend on specific criteria applicable to the facts of that particular case, including, for example, the parties’ assertions, arguments and submissions. Finally, a party in proceedings before the Office may not rely on, or use to its own advantage, a possible unlawful act committed for the benefit of some third party in order to secure an identical decision.

In view of the above, it follows that, even if the previous decision submitted to the Opposition Division is to some extent factually similar to the present case, the outcome may not be the same. Furthermore, it should be explained that the Boards of Appeal, in its decision of 06/09/2018 (R 959/2018-5, Symbionat/Symbioram) confirmed that the verbal element ‘SYMBIO’ is distinctive to a normal degree with regard to goods in Class 5. Therefore, the applicant’s claim must be set aside.

Considering all the above, there is a likelihood of confusion on the part of the public.

Therefore, the opposition is well founded on the basis of the opponent’s European Union trade mark registration No 12 899 258. It follows that the contested trade mark must be rejected for all the contested goods.

As the earlier European Union trade mark registration No 12 899 258 leads to the success of the opposition and to the rejection of the contested trade mark for all the goods against which the opposition was directed, there is no need to examine the other earlier rights invoked by the opponent (16/09/2004, T‑342/02, Moser Grupo Media, S.L., EU:T:2004:268).

COSTS

According to Article 109(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party.

Since the applicant is the losing party, it must bear the opposition fee as well as the costs incurred by the opponent in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(i) EUTMIR (former Rule 94(3) and (6) and Rule 94(7)(d)(i) EUTMIR, in force before 01/10/2017), the costs to be paid to the opponent are the opposition fee and the costs of representation, which are to be fixed on the basis of the maximum rate set therein.

The Opposition Division

Saida CRABBE

Michal KRUK

Vita VORONECKAITE

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds for appeal must be filed within four months of the same date. The notice of appeal will be deemed to have been filed only when the appeal fee of EUR 720 has been paid.